Appeal No. 95-3337
Application No. 07/759,100
All of the claims on appeal stand rejected under 35
U.S.C. § 103 as being unpatentable over Müeller in view of
Lindblad and further in view of Raiha and Friend and the
Biotechnology article. 2
2In the body of the Answer, the examiner also refers to
certain portions of the subject specification which she
implies represent admitted prior art. For example, on page 6
of the answer in discussing the here-claimed recombinant human
virus-free human milk protein, the examiner states:
"Appellant has apparently not developed these proteins, but is
substituting them for known human milk proteins to make a
humanized milk product. See page[s] 7-10 of appellant[']s
specification for known genetically engineered proteins"
(emphasis added). However, it is well settled that, where
prior art is relied on to support a rejection, there would
appear to be no excuse for not positively including the prior
art in the statement of rejection. In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). As a
consequence, we will assess the examiner's conclusion of
obviousness based solely upon the above-noted prior art
references which are positively included in the examiner's
statement of rejection. The examiner's aforementioned
referrals to the subject specification in support of her
obviousness conclusion are additionally inappropriate because
the record before us is considerably unclear as to
specifically what portions of the specification disclosure,
including those portions which discuss recombinant human milk
protein of the type here claimed, represent subject matter
known in the prior art. This last mentioned point is
reinforced by the examiner's use of the aforequoted term
"apparently." We here emphasize that a rejection under 35
U.S.C. § 103 must rest on a factual basis rather than
conjecture, speculation or assumption. In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178, cert. denied, 389 U.S. 1057
(1968).
4
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